Thursday, August 24, 2006

Applicant Trico won the phantom mark battle but lost the war in its attempt to register the marks shown below for windshield wiper blades. The Board found the marks to be merely ornamental and lacking in secondary meaning. In re Trico Products Corp., Serial Nos. 76393303 and 76394328 (July 20, 2006) [not citable].

Although it is difficult to tell the difference from the drawings, the upper mark "consists of a contrasting color used on a stripe on the wiping element" of the wiper blade, while the lower mark features "a stripe running longitudinally on the sidewall of the blade."

Considering first the "contrasting color" case, the wiping element is a dark color and the stripe a light color. Examining Attorney Raul Cordova held that the mark was not inherently distinctive, and the Board agreed. [It therefore found it unnecessary to address Applicant's question as to whether a "contrasting color" mark (as opposed to a single color) can ever be inherently distinctive].

"... the contrasting color refers to that part of applicant's wiper blade that is different from the rest of the blade inasmuch as it reflect the Teflon stripe that is contained in applicant's blade. *** The design is a slight variation from the traditional design of a wiper blade. *** Consumers would understand the commercial impression of applicant's wiper design stripe as simply indicating the presence of a Teflon substance rather than a trademark."

As to the phantom mark issue, the Board followed In re Data Packaging Corp., 172 USPQ 396 (CCPA 1972), which held to be registrable an annular band on a computer tape reel in a color contrasting with the reel flange:

"... there is no reason why an applicant should not be able to obtain a single registration of a design mark covering all the different colors in which it may appear, that is to say, not limited to a particular color." 172 USPQ at 397.

The Board noted that the more recent phantom mark ruling in In re International Flavors and Fragrances Inc., 51 USPQ2d 1513 (Fed. Cir. 1999), "[a]s a panel decision, did not and could not overrule Data Packaging." Moreover, in International Flavors -- which involved the word marks LIVING XXXX FLAVORS and LIVING XXXX FLAVOR, where XXXX represented "a specific herb, fruit, plant or vegetable -- "the public was left to guess as to what the limits of the mark were." Not so in Data Packaging and not so here.

Finally, as to acquired distinctiveness, Trico's evidence fell short. In its supposed "look for" advertising, references to the stripe were "buried in substantial text" and appeared to highlight the presence of Teflon rather than indicate the stripe as a source-identifier. Evidence of advertising expenditures was not helpful because the advertising did not promote the stripe as a trademark. And the sales volume evidence did not, by itself, show recognition of the stripe as a trademark as opposed to recognition of the alleged technical improvements in the wiper blades.

Turning to the other mark, involving a stripe on the blade sidewall, the Board again rejected the PTO's phantom mark argument. It also found the mark to be merely ornamental and not inherently distinctive: it is "simply a minor refinement of the common blade design" and it "reflects the presence of a new material (TEFLON coating) on the wiper blade." It would be viewed "as the addition of new material to the blade and not a trademark for applicant's goods." As to acquired distinctiveness, Trico's evidence was virtually the same as, if not identical to, its evidence regarding the other mark, and the Board's conclusion was the same.

Therefore, the Board affirmed the refusals to register on the ground that the marks are not inherently distinctive and lack secondary meaning.

TTABlog comment: For more discussion of phantom marks, see the TTABlog posting here.